Appeal No. 2006-2521
Application No. 09/788,582
voltage level and an adjusted voltage level, such definitions of states are not taught by the
prior art and were undiscovered prior to appellants’ invention [reply brief, pages 2-3].
We will sustain the examiner’s rejection of claims 1-23. The examiner has carefully
explained how the invention of claim 1 reads on Tateishi. Appellants’ argument seems to
be that even if Tateishi may be interpreted in the manner suggested by the examiner,
Tateishi never recognized this interpretation. In other words, appellants seem to be
arguing that the prior art itself must provide the interpretation advanced by the examiner.
We do not agree. Anticipation by a prior art reference does not require either the
inventive concept of the claimed subject matter or the recognition of inherent properties
that may be possessed by the prior art reference. Verdegaal Brothers Inc. v. Union Oil
Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Since the
examiner’s interpretation of the claimed invention is reasonable, and since the invention
as interpreted exists within a single prior art reference, we agree with the examiner that
the reference anticipates the claimed invention.
In summary, we have sustained the examiner’s rejection of claims 1-23. Therefore,
the decision of the examiner rejecting claims 1-23 is affirmed.
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